PCT Patent application

1. What is a PCT patent application?

A patent application under the regulations of the “Treaty on International cooperation in the field of intellectual property rights” (Patent Cooperation Treaty) is called a PCT application or International patent application. A PCT application does not result in the grant of an International patent, but merely allows a single patent application to be filed covering all PCT member states, which include almost all countries of usual interest with the exception of Taiwan. The International patent application process comes to an end 30 months after the priority date, at which time individual national or regional patent applications must be filed, which is referred to as entering the national or regional phase. This will trigger the requirement to file a translation into the national language (if required) as well as paying fees, filling in forms etc. Each national or regional patent application is then separately examined by the relevant patent office under national law as if it were a regular national patent application.

A PCT application thus has the advantage of initiating the patent application process in all PCT contracting states with a single patent application. An overview of the deadlines and other requirements for entering the national and regional phases is available at the WIPO website. Using the PCT process, the applicant defers a country choice for 30 months from the original patent filing at a relatively modest cost compared to the cost of making many individual patent applications at the 12 month point, which is the traditional option under the Paris Convention. The high costs of multiple national applications thus occur 18 months later than with the Paris Convention procedure, which allows more time to assess the commercial success of the invention before deciding on national patent filings. The applicant can also base the decision to proceed with national applications on the search opinion on the patentability of the invention which will have been issued as part of the PCT procedure. This removes some of the uncertainty as to whether in the end national patents are likely to be granted or not.

As of 17 October 2019, there were 153 contracting states to the PCT. For more information, please ask one of our German patent attorneys or European Patent Attorneys

2. How do I apply for a PCT patent application?

An international patent application may be submitted to the European Patent Office in Munich (EPO). For European applicants, the European Patent Office is the International Searching Authority (ISA).

The documents of the patent application must include: A description, claims, drawings (optional) and a summary. In addition, an inventor’s designation must be filed. Further information may be found on the website of the WIPO.

3. What happens after filing?

After filing the application, the EPO checks the formal requirements and then conducts an international search for relevant prior art. The international search report comprises the classification of the invention and cites those prior art documents that are regarded as essential for the invention. Together with the international search report, the EPO issues a written opinion on patentability including a statement whether the claimed invention is new, involves an inventive step and is susceptible of industrial application. If the EPO finds that the international application does not meet the requirements of unity of invention, the applicant is required to pay additional search fees.

Upon receipt of the international search report, the applicant may amend the claims once (Article 19 PCT). In this case he has to submit a new set of claims, explain the difference and specify the basis for the changes to the WIPO.

Depending on the results of the international search report, the applicant may finally decide if, or in which countries, he wants to enter into the national phases, which are then examined by the respective patent offices.

Please do not hesitate to contact us in case of questions about the PCT proceedings. Our German and European Patent Attorneys in Munich will be pleased to advise you. Please feel free to contact us.

4. How much does a PCT patent application cost?

A PCT patent application incurs additional costs in the international phase before the EPO comprising official fees and charges. These costs would not have occurred, if national applications had been filed directly with the patent offices of the desired countries. However, a PCT application provides some advantages (see above) which compensates the additional costs by far.

For details on the cost of a PCT patent you may find more information on our website in the menu patent costs.

If you have any questions about the PCT patent application or questions about the nationalization of a PCT patent application, we are pleased to advise you. Please feel free to call one of our German patent attorneys or European Patent Attorneys in Munich.